Ex Parte Tanguay et al

Patent Trial and Appeal Board

Sep 24, 2013

10977428 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DONALD O. TANGUAY JR., DANIEL G. GELB,
MICHAEL HARVILLE, and HENRY H. BAKER
____________

Appeal 2011-004010
Application 10/977,428
Technology Center 2600
____________

Before CARL W. WHITEHEAD, JR., ERIC S. FRAHM, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claim 37. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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STATEMENT OF THE CASE
Appellants disclose a process whereby a writing surface (e.g.,
whiteboard) of a conference participant is video recorded and a resulting
image is processed to extract the foreground (e.g., extract drawn lines), map
the foreground to a x-y coordinate reference, and layer the foreground over a
composite of other participants’ extracted image foregrounds that have been
likewise mapped and layered on the x-y coordinate reference. Spec.,
¶¶[028]-[030]; Fig. 2. The writing surface can serve as both a display and
input for the composite; e.g., each participant may project the composite
onto a whiteboard and then draw directly on the projected composite to add
another layer. Id., ¶ [056].
Claim 37, reproduced below, is the only pending claim.
37. A computer readable medium containing program
instructions that implements a method for communicating
through shared media, comprising:
accessing a plurality of images of respective input
interfaces of a plurality of input interfaces, wherein an input
interface of said plurality of input interfaces provides a medium
for accepting participant input, wherein at least one of said
plurality of images of said respective input interfaces is
captured using a camera, and wherein each of said plurality of
images contributes forms of communication to a shared virtual
model;
extracting at least one of said forms of communication
from said plurality of images;
constructing a respective appearance model
corresponding to each of said plurality of input interfaces,
wherein each of said respective appearance models contributes
respective forms of communication and is transformed to a
reference frame of a reference coordinate system;
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combining each of said respective appearance models
together to generate said shared virtual model; and
displaying said shared virtual model to at least one output
medium.
The Examiner relies on the following references as evidence of
unpatentability:
Malzbender US 2003/0234859 A1 Dec. 25, 2003
Poon US 2001/0035976 A1 Nov. 1, 2001
REJECTIONS
The Examiner rejected claim 37 under 35 U.S.C. § 103 as
unpatentable over Malzbender and Poon. Ans., pp. 4-7.1
ANALYSIS
The Examiner cites Malzbender’s Figure 1 embodiment as teaching
all but the claimed invention’s “input interface,” which “provides a medium
for accepting participant input.” Ans., p. 6. The Examiner determined that,
as evidenced by Poon’s video capture and extraction of a whiteboard image
foreground for video conferences, it would have been obvious to implement
the claimed input interface within Malzbender’s cited embodiment. Id. at p.
7 (citing Poon, ¶ [0011]). Before turning to Appellants’ arguments, we
address Malzbender and Poon.

1 Throughout this opinion, we refer to the Specification filed October 29,
2004 (“Spec.”), Appeal Brief filed July 12, 2010 (“App. Br.”), Examiner’s
Answer mailed September 10, 2010 (“Ans.”), and Reply Brief filed
November 10, 2010 (“Reply Br.”).
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In real time, Malzbender’s system video captures conference
participants and renders them as three-dimensional avatars within a virtual
environment. Malzbender, ¶¶ [0028] and [0029]. The avatars are freely
moved within the virtual environment and express the present emotional
states of the participants. Id. To render an avatar, the system video records
a respective participant via several cameras arranged in a semi-circular,
inward-facing pattern. Id., ¶¶ [0033] and [0034]; Figs. 2A and 2B(200).
The participant’s facial contours are segmented from each captured image.
Id., ¶¶ [0040] and [0041]; Fig. 1(120). The segmented contours are formed
into multiple three-dimensional views of the participant (i.e., multiple
avatars), each view corresponding to the perspective another participant; that
is, each view displaying the participant/avatar to another participant/avatar
in accord with their locations and orientations within the virtual
environment. Id.; Fig. 1(150). For increased efficiency, the multiple views
(termed “artificial views” by Malzbender) are aggregated and transmitted via
a peer-to-peer communication to all participants. Id., ¶ [0047]; Fig. 1(170).
In real time, Poon’s system video captures and extracts a whiteboard
image foreground for video conferences. Poon, Abstract. In addition, the
system removes unwanted imaging from the captured whiteboard image;
e.g., removes imaged smudges of the whiteboard. Id.
Appellants present several arguments, which we address below in
view of the above findings. Appellants argue:
[T]he claimed embodiment recites that images of input
interfaces are accessed.
. . . Appellants understand the instant Office Action to assert
that camera acquisition modules 112, 114 and 116 are the input
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interfaces. However, Appellants respectfully submit that this is
not what is claimed.
App. Br., p. 9. Appellants are contending above that the claimed input
interfaces do not video record an image (e.g., are not video cameras), but are
rather video recorded substrates of an image (e.g., whiteboards). This
argument is not persuasive for each of two reasons.
First, even assuming arguendo that the claimed input interfaces are
video recorded substrates of an image, a video camera indeed includes such
a substrate. Namely, as is notoriously well known in the art, a video camera
includes a substrate matrix of photo-sensors upon which an image is
focused. Such a substrate would be ordinarily understood as an input
interface. Cf., Random House Webster’s Unabridged Dictionary, 993 (2d
ed. 2001) (defining “interface,” in part, as “a surface regarded as a common
boundary of two bodies, spaces, or phases” and “a common boundary or
interconnection between systems, equipment, concepts, or human beings”).
Though the Specification describes “input interfaces” that are video recorded
(see e.g., Spec., ¶¶ [015] and [018]), these descriptions do not amount to a
disavowal of interfaces implemented within a camera; that is, do not
disavow a substrate matrix of photo-sensors. See In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1365 (Fed. Cir. 2004) (An applicant “may
demonstrate an intent to deviate from the ordinary and accustomed meaning
of a claim term by including in the specification expressions of manifest
exclusion or restriction, representing a clear disavowal of claim scope.”
(Quotation and citation omitted)).
Second, the Specification expressly instructs that, “[w]hile the present
invention has been described in particular embodiments, it should be
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appreciated that the present invention should not be construed as limited by
such embodiments, but rather construed according to the below claims.”
Spec., ¶ [0102]. Claim 37 does not recite input interfaces as being video
recorded, but rather recite the images of input interfaces as being video
recorded. If Appellants sought to also require recording of an input
interface, as opposed to merely the image of an input interface, then this
feature should have been clearly recited. Any ambiguity in that regard lies
at the fault and detriment of Appellants. See e.g., Halliburton Energy Servs.,
Inc., v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (“[T]he patent drafter
is in the best position to resolve the ambiguity in the patent claims, and it is
highly desirable . . . that applicants do so . . . during prosecution rather than
attempting to resolve the ambiguity in litigation.”); Hoganas AB v. Dresser
Industries, Inc., 9 F.3d 948, 951 (Fed. Cir. 1993) (“If Hoganas . . . intended
something different, it could have prevented this result through clearer
drafting. . . . [I]nterpret[ing] the claim differently just to cure a drafting error
made by Hoganas . . . would unduly interfere with the function of claims in
putting competitors on notice of the scope of the claimed invention.”).
Appellants also argue:
Appellants understand the instant Office Action to assert that
camera acquisition modules 112, 114 and 116 of Malzbender
illustrate both the claimed “input interfaces” and the claimed
“camera.”
In contrast, the claimed embodiment recites “accessing a
plurality of images of respective input interfaces of a plurality
of input interfaces, . . . wherein at least one of said plurality of
images of said respective input interfaces is captured using a
camera. . . .”
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App. Br., pp. 9-10. Appellants are again contending above that the claimed
method video records the input interfaces and, in turn, further contend that
the claimed input interfaces cannot be read on Malzbender’s camera
modules. As explained in response to Appellants’ prior argument (see block
quote at supra, p. 4), claim 37 requires only the images of the input
interfaces – not the input interfaces – to be video recorded. Thus, the
claimed camera and input interfaces can be respectively read on
Malzbender’s camera modules and included substrate matrices of photo-
sensors. And, the claimed images can be read on the images implicitly
focused on the substrate photo-sensor matrices.
Appellants also argue:
Appellants respectfully submit that Malzbender does not teach
or suggest “extracting at least one of said forms of
communication from said plurality of images” (emphasis
added) as claimed.
Appellants note that the instant Office Action recites that
“figure 1 discloses 160 and 170 where networking
communication is link with system, this is seen as the
respective form of communication” (emphasis added; instant
Office Action; page 3, lines 17-19, and page 4, lines 5-7). . . .
. . . Malzbender does not teach, describe or suggest that network
communication information is extracted from the video
streams.
App. Br., p. 10. Appellants are contending above that Malzbender’s “virtual
environment user interface” 160 and “compression/network interface” 170
do not receive the images recorded by the camera modules 112-116 and
therefore cannot “extract[] . . . forms of communication from said plurality
of images,” as claimed. We agree insofar that Malzbender’s cited
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components 160, 170 receive only the “artificial views” formed from the
captured images (discussed supra, pp. 3-4), not the captured images
themselves. However, the Examiner did not err in finding that Malzbender’s
artificial views are extracted from the captured images. As shown by
Malzbender’s Figure 1, the contour derived from each image at a “contour
extraction” module 120 is provided each of the “new view synthesis”
modules 150 and there used to derive the respective artificial views (also
discussed supra, pp. 3-4). See also Random House Webster’s Unabridged
Dictionary, 993 (2d ed. 2001) (defining “extract,” in part, as “to deduce,” “to
derive or obtain,” and “to determine”).
Appellants also argue:
Appellants respectfully submit that Poon discloses that all
writings and/or drawings of the presenter are communicated to
the audience, and that the audience does not communicate
writings and/or drawings to the presenter. . . .
. . . Malzbender discloses a system in which multiple
participants participate in two-way communication. By
teaching a system of one-way communication, Appellants
respectfully submit that Poon teaches away from the suggested
modification and combination with Malzbender.
Moreover, Appellants note that “[i]f the proposed
modification or combination of the prior art would change the
principle of operation of the prior art invention being modified,
then the teachings of the references are not sufficient to render
the claims prima facie obvious.” Moreover, [i]f the proposed
modification would render the prior art invention being
modified unsatisfactory for its intended purpose, then there is
no suggestion or motivation to make the proposed amendment.”
App. Br., pp., 12-13 (citations omitted). The argument is not persuasive.
Appellants merely allege that Malzbender and Poon respectively teach
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incompatible two-way and one-way communications. Appellants do not
present any evidence that the cited features of Malzbender and Poon are
indeed incompatible, much less the cited features are combined in an
unobvious manner. As previously explained, mere assertions cannot take
the place of evidence. See supra, p. 5 (citing Pearson, 494 F.2d at 1405;
Nakashima, 93 USPQ2d at 1837); see also In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from common
experience is just attorney argument and not the kind of factual evidence that
is required to rebut a prima facie case[.]” (citations omitted)).
Note that, even assuming arguendo the cited teachings of Malzbender
and Poon are incompatible, a mere showing of incompatibility would be
insufficient to rebut the Examiner’s prima facie case. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference[.]”). For example, turning to the
emphasized portions of Appellants’ argument, a mere showing that the
combined teachings are incompatible would not in and of itself establish that
skilled artisans are discouraged from pursuing Appellants’ invention as
claimed. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away. . . if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” (citation omitted)). And, a mere showing that combined
teaching are incompatible would not in and of itself establish a resulting loss
of the features underlying a principle of operation or intended purpose of
Malzbender’s cited embodiment.
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Note further that, in light of our interpretation of “input interface,” the
Examiner’s reliance on Poon is unnecessary to reject claim 37. As discussed
supra, the Examiner found that Malzbender does not teach “an input
interface of said plurality of input interfaces provides a medium for
accepting participant input,” as is claimed, and accordingly cited Poon as
suggesting this feature. Supra, p. 5. However, as also discussed supra, each
video camera of Malzbender implicitly includes such an input interface (e.g.,
a substrate matrix of photo-sensors). Id.
ORDER
The Examiner’s decision rejecting claim 37 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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